Ex Parte Schneider

Patent Trial and Appeal Board

Mar 27, 2018

14298223 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/298,223 06/06/2014
60840 7590 03/29/2018
MICHAEL, BEST & FRIEDRICH LLP (MT)
100 EAST WISCONSIN A VENUE
SUITE 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Daniel H. Schneider
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
066042-8257-US02 5451
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
03/29/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
MKEIPDOCKET@MICHAELBEST.COM
milwaukeeip@milwaukeetool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL H. SCHNEIDER
Appeal2017-005216
Application 14/298,223
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-18. Final Act. (Office Action
Summary); Ans. 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-005216
Application 14/298,223
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a shears" and, more
particularly, to "blades that are pivotally coupled." Spec. i-fi-12, 3. Sole
apparatus claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. A shears comprising:
a first cutting blade including a first aperture;
a second cutting blade including a second aperture, the
second cutting blade pivotally coupled to the first cutting blade
at a pivot joint;
a first handle operable to pivot the first cutting blade
about the pivot joint; and
a second handle operable to pivot the second cutting
blade about the pivot joint,
wherein the pivot joint includes a bolt that extends
through the first aperture and the second aperture, the bolt
including a head, a shank that extends from the head, and a
longitudinal axis that extends centrally through the head and the
shank along a length of the shank, and
wherein the head includes a concave outer surface that
extends around the longitudinal axis of the bolt.
REFERENCES RELIED ON BY THE EXAMINER
Dalley
Kudelko
Wiss
Chen
us 2,251,548
us 3,656,397
us 3,672,053
US 2008/0072716 Al
Aug. 5, 1941
Apr. 18, 1972
June 27, 1972
Mar. 27, 2008
THE REJECTIONS ON APPEAL
Claims 1-14 are rejected under 35 U.S.C. § 103 as unpatentable over
Wiss and Kudelko.
Claims 1, 17, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Chen and Kudelko.
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Application 14/298,223
Claims 15 and 16 are rejected under 35 U.S.C. § 103 as unpatentable
over Chen, Kudelko, and Dalley.
ANALYSIS
The rejection of claims 1-14
as unpatentable over Wiss and Kudelka
Appellant argues claims 1-14 together. App. Br. 5---6. We select
independent claim 1 for review with dependent claims 2-14 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 1 pertains to
shears having a pivot bolt "wherein the head [of the bolt] includes a concave
outer surface that extends around the longitudinal axis of the bolt."
The Examiner primarily relies on the teachings of Wiss for disclosing
the limitations of claim 1, but acknowledges that "Wiss does not disclose
wherein the head includes a concave outer surface" but rather discloses "a
convex surface." Final Act. 2-3. The Examiner then references Figure 3 of
Kudelko and identifies where Kudelko teaches, "[i]t should be noted that
although shoulder section 16 is shown as concave, it could also be convex
depending on the design parameters of the bolt and the joint." Final Act. 3
(referencing Kudelko 2:40---60). Based on such teachings, the Examiner
states that it would have been obvious "to modify the [] shoulder of the bolt
of Wiss from a convex to a concave profile as taught by K[ u ]delko as a
matter of design choice." Final Act. 3. The Examiner further states, "each
profile is known to be capable of providing significant design strength to
resist the loads associated with tightening a bolt." Final Act. 3; see also
Kudelko 2 :20-21 ("the weight of a bolt is significantly reduced while its
strength is retained").
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Application 14/298,223
Appellant initially contends that the cited combination (i.e., Wiss and
Kudelko) "is based on impermissible hindsight." App. Br. 5; Reply Br. 2.
This is because, as per Appellant, "there are nearly an unlimited number of
different types of screws/bolts, each of which have various head
configurations." App. Br. 5; Reply Br. 3. Consequently, and because of this
"virtually endless variety," Appellant contends, "it is highly improbable for
one of ordinary skill in the art to modify the shears of Wiss with the specific
head configuration ofKudelko." App. Br. 6; Reply Br. 3. Hence, Appellant
"submits that the obviousness rejection presented by the Examiner is solely
based on impermissible hindsight." App. Br. 6; Reply Br. 3.
Appellant's contention does not address the Examiner's reliance on
Kudelko' s teaching of relative equivalency between concave and convex
head configurations, or that "each profile is known to be capable of'
resisting the loads associated therewith. See supra. The Examiner is
addressing the specific teachings of the bolt head shapes disclosed in Wiss
(convex) and Kudelko (concave), and is not addressing a more ambiguous
"endless variety" as argued by Appellant. Accordingly, Appellant is
rebutting an argument not made by the Examiner, and, hence, is not
addressing the rejection expressed by the Examiner.
Appellant also alleges that Wiss and Kudelko are non-analogous art
because Wiss and Kudelko are directed to different fields of endeavor (i.e.,
"scissors, snips, and the like" vs. "the aerospace field"). App. Br. 5; Reply
Br. 2. Appellant also contends that the two references address different
problems ("reducing the friction" vs. "a bolt having reduced weight"). App.
Br. 5; Reply Br. 2. However, as above, Kudelko provides guidance as to the
relative equivalency between convex and concave head designs, and
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Application 14/298,223
Kudelko does not restrict such equivalency to any particular field or to any
particular problem. Instead, Kudelko discusses equivalency generically, i.e.,
"depending on the design parameters of the bolt and the joint." Kudelko
2 :4 7-50. Furthermore, we have been instructed that "[ w ]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). The Examiner appears to be applying these instructions when
stating that it would have been obvious to improve "shears by applying
known techniques in one field to another application." Ans. 11. Thus, in
view of the above, Appellant is not persuasive that it would have been
improper to modify Wiss' s shears in accordance with Kudelko 's teachings.
Appellant further states, "[t]here is no indication that the snips of Wiss
does not have sufficient strength and requires the aerospace quality bolt of
Kudelko." App. Br. 6; see also Reply Br. 2. Appellant's argument is not
persuasive since Kudelko teaches that either head design can be sufficient
"depending on the design parameters." Kudelko 2:49-50. In other words,
Appellant does not explain how the design parameters of Wiss' pivot bolt
cannot be satisfied by Kudelko's equivalent bolt. To be clear, Kudelko
addresses changes in bolt head design but only "while its strength is
retained." Kudelko 2 :21. Thus, although Wiss does not express any dis-
satisfaction with the strength of its convex pivot bolt, the Examiner's
modification in accordance with Kudelko' s teachings would not alter the
pivot bolt's strength and the bolt would still function as intended (i.e., such
use would not render the arrangement inoperable).
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Application 14/298,223
Appellant also explains that their design "is concerned with providing
snips that avoid snagging of the joint as the snips are inserted in the user's
carrying device." App. Br. 6. However, such a feature is not addressed in
any claim language. Furthermore, Appellant does not explain how this
feature of avoiding snagging is not likewise achieved via Wiss' un-modified
convex design, such that this feature is already known and not unexpected.
Appellant further contends, "the references teach away from their
combination." Reply Br. 4. This is because, as per Appellant, Wiss teaches
"enlarging the head 22 of the screw 23 ... while Kudelko teaches reduction
of weight." Reply Br. 3. Appellant misreads Wiss. Wiss actually addresses
enlarging "[t]he head of the bushing" (24), and not the head of the screw
(23). Wiss 1 :50-51. The Examiner specifically addresses Wiss' "bolt (23),"
not Wiss' bushing 24. Final Act. 3.
Appellant also misreads Kudelko contending that in Kudelko "the
base section Dis removed." Reply Br. 3. However, a reading of Kudelko
indicates that base section D is thinned, not removed. Kudelko 2: 16-1 7
("the thickness of base section D merely adds superfluous weight to the
bolt"); compare Kudelko Fig. 1 with Figs. 2--4.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in combining Wiss and Kudelko, nor in rejecting claims
1-14 as being obvious over Wiss and Kudelko.
The rejection of claims 1, 17, and 18
as unpatentable over Chen and Kudelka
Appellant argues claims 1, 17, and 18 together. App. Br. 6-8. We
select claim 1 for review, with claims 17 and 18 standing or falling with
claim 1.
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The Examiner relies on Chen for the same reasons Wiss was relied
upon above. Final Act. 5---6. The Examiner also relies on Kudelko for
similar reasons and the Examiner again relies on "design choice" for the
modification of Chen in accordance with the teachings of Kudelko. Final
Act. 6; see also Ans. 12.
Appellant likewise repeats arguments previously made (i.e.,
"hindsight," the references are directed to different fields and different
problems, "there are nearly an unlimited number of different types of
screws/bolts," "it is highly improbable ... to modify the shears of Chen with
the specific head configuration of Kudelko," and "no indication that the
snips of Chen does not have sufficient strength and requires the aerospace
quality bolt ofKudelko"). App. Br. 6-8; see also Reply Br. 4--5. For the
same reasons expressed above, Appellant's contentions are not persuasive of
Examiner error. We sustain the Examiner's rejection of claims 1, 17, and 18
as being obvious over Chen and Kudelko.
The rejection of claims 15 and 16
as unpatentable over Chen, Kudelka, and Dalley
Although Appellant addresses claim 16 separate from claim 15,
Appellant, with respect to claim 16, relies on "similar reasons as discussed
above with respect to dependent claim 15." App. Br. 10; see also Reply Br.
7-8. Accordingly, we select claim 15 for review, with claim 16 standing or
falling with claim 15.
Claim 15 depends from claim 1 and includes the limitation, "no
portion of the head of the bolt extends beyond the first cutting blade." The
Examiner relies on the additional reference to Dalley for this teaching. Final
Act. 6-7; see also Ans. 12-13. Appellant disagrees stating that Dalley has
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Application 14/298,223
"hub portions 9, 10, which encase nut 11 and screw 12, protruding laterally
outward from cutting blades 7, 8." App. Br. 9; Reply Br. 6. In other words,
in Dalley, the screw "extends beyond the cutting blades 7, 8." App. Br. 9;
Reply Br. 6.
Dalley identifies items 7 and 8 as "the companion blades of the
shears." Dalley 1 :35-36. After designating blades 7 and 8, Dalley states,
"[t]hese have hub portions 9 and 10." Dalley 1 :36-37. Hence, as
understood, Dalley's blades 7 and 8 "have" or incorporate hubs 9 and 10
thereunto. This is consistent with the Examiner's understanding of Dalley.
See Ans. 13 ("[ t ]hese hubs can therefore be considered part of the blades").
Appellant, however, argues based on the premise that Dalley's blades do not
incorporate the hubs (i.e., the hubs are separate from the blades), which is
contrary to Dalley's explicit teaching, i.e., "[t]hese have." See App. Br. 8-9;
Reply Br. 6-7. As such, Appellant's contention that Dalley's screw
"extends beyond" blades 7 and 8 is not correct because a review of Dalley' s
Figures 2 and 6 show that Dalley's screw does not extend beyond hubs 9 and
10 that form a part of the blades. Accordingly, we are not persuaded the
Examiner erred in relying on Dalley for its explicit teachings and
illustrations. See Final Act. 6-7; Ans. 12-13. We sustain the Examiner's
rejection of claims 15 and 16 as being obvious over Chen, Kudelko, and
Dalley.
DECISION
The Examiner's rejections of claims 1-18 are affirmed.
No time period for taking any subsequent action in connection with
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Application 14/298,223
this appeal may be extended as set forth in 37 C.F.R. § 1.136(a).
AFFIRMED
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